GIBRALTAR Law and Practice Contributed by: Emma Lejeune, Stuart Dalmedo, Adrian Pilcher, Nicholas Isola, Danielle Victor, James Castle, Louise Anne Turnock and Danielle Curtis, ISOLAS LLP
manufacture, use or sale of the invention in Gibral - tar by some person or persons after the priority date applicable to the patent in the United Kingdom and before the date of the issue of the certificate of regis - tration under Section 4. For the purposes of this proviso the expression “pri - ority date” in its application to a patent in the United Kingdom has the meaning assigned to it in Section 5 of the Patents Act, 1949, or any other Patents Act for the time being in force.” 7.2 Trade Marks A trade mark is a sign which can distinguish the trade origin of goods and/or services from those of com - petitors. A trade mark must be considered to be dis - tinctive, which means it can be recognised as a sign that differentiates the origin of goods and/or services from those of other sources. A trade mark may include words, sounds, logos, colours, shape or any combina - tion thereof. The Registrar of Trade Marks deals with the registra - tion of trade marks under the Trade Marks Act 1948 and the Trade Marks Rules 1948. It is not possible for originating applications to be made in Gibraltar. In accordance with Section 3 of the Trade Marks Act 1948, and subject to Part 3 of that Act, any person being the registered proprietor of a trade mark in the United Kingdom by virtue of an entry in the register of trade marks kept under the Trade Marks Act 1994, or any person deriving title from such registered pro - prietor by assignment or other mode of transfer, may apply at any time during the existence of the registra - tion in the United Kingdom to have such trade mark registered in Gibraltar in respect of some or all of the goods comprised in the United Kingdom registration. Part 3 of that Act refers, in particular, to the following. • An international trade mark (UK) (ie, a trade mark entitled to protection in the UK which results from an international application made on or after 1 January 2021 for registration under the Madrid Protocol and designates the UK) where the reg - istered proprietor of an international trade mark (UK) shall enjoy in Gibraltar the like privileges and rights as though the certificate of registration of
the international trade mark (UK) had been issued with an extension to Gibraltar. Those privileges and rights shall continue in force only for so long as the registration in the UK remains in force. • A comparable trade mark (EU) and (UK) where the registered proprietor of a trade mark registered in the UK as a comparable trade mark (EU) or a comparable trade mark (IR) under the Trade Marks Act 1994 shall enjoy in Gibraltar the like privileges and rights as though the registration in the United Kingdom had been extended to Gibraltar, until the date of expiry of the registration of such trade mark. Those privileges and rights conferred shall continue in force only for so long as the registration of the comparable trade mark (EU) or the compara - ble trade mark (IR), as the case may be, in the UK remains in force. The following documents are required in order to reg - ister a trade mark under the Trade Marks Act 1948: • application for registration of a trade mark (Form 1) (the Trade Marks Rules 1948); • certified representation of the trade mark and a certificate of the Comptroller of the UK Patent Office (under their title of Registrar of Trade Marks) giving full particulars of the registration of the trade mark in the UK and such other documents as may from time to time be prescribed (Section 4 of the Trade Marks Act 1948); • where the trade mark to be registered is a device, two prints of the trade mark; and • the applicable filing fee of GBP30 (the Trade Marks Rules 1948). Once all the relevant documents have been submit - ted to the Gibraltar Registry, the Registrar will then enter the prescribed particulars in the register and shall issue a certificate of registration to the applicant, who shall then be the registered proprietor in Gibraltar of the trade mark in respect of the goods entered in the register. The registration of the trade mark is renewable every ten years and valid in Gibraltar as long as it is valid in the UK or the EU.
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